Doubtful Purpose of Trade Mark Adoption May Imply Registration Tainted by Bad Faith

INTRODUCTION

Recently, in the case of Major League Baseball Properties Inc v. Manish Vijay & Ors.^[1], the Delhi High Court, while adjudicating a cancellation petition filed by Major League Baseball Properties Inc. directed the Registrar of Trade Marks to remove the mark “BLUE-JAY”. The Court held that the said mark had been mala fidely and subsequently adopted by the Respondents and reiterated that the purpose behind the adoption of a trade mark is of critical importance and must be assessed through a purposive lens.

BACKGROUND

The Petitioner, based in the United States of America, is the intellectual property holding company of Major League Baseball (MLB), overseeing licensing and merchandising for all MLB clubs. It adopted the trade marks “BLUE JAYS” and “TORONTO BLUE JAYS” in 1976 and has since secured registrations for these marks in several jurisdictions, including but not limited to the United States, the United Kingdom, the European Union, Australia, Brazil, China, South Korea, and India, where the earliest application dates back to 1983.

The present dispute arises from the registration of the mark “BLUE-JAY” by the Respondents, who are engaged in the manufacture and sale of readymade garments and allied goods in India. Upon publication of the Respondents’ mark, the Petitioner filed a Notice of Opposition, asserting similarity with its prior marks. However, due to non-filing of evidence within the prescribed period, the opposition was deemed to have been abandoned, and the Respondents' application proceeded to registration. Subsequently, the Petitioner initiated rectification proceedings, seeking cancellation of the Respondents’ registered mark.

In support of its cancellation petition, the Petitioner submitted that it had bona fidely adopted the mark “BLUE JAYS” in 1976 and has been continuously using the said mark and its variants ever since. The Petitioner asserted that its “BLUE JAYS” marks have built considerable goodwill and international recognition over several decades, and that this reputation has extended to India through the broadcast of MLB games, consistent media coverage, and widespread public access to its online platforms. It was submitted that the Petitioner has both existing and historic trade mark registrations and applications for the “BLUE JAYS” marks in India, with the earliest dating back to 1983. On this basis, the Petitioner claimed to be the prior adopter and user of the mark in the Indian market. It was further alleged that the Respondents adopted the impugned mark, which is nearly identical and used for similar goods, in a dishonest manner with the intention of capitalising on the Petitioner’s goodwill and reputation.

The Respondents, in their defence, contended that they had independently adopted the mark “BLUE-JAY” in 1998, without any knowledge or reference to the Petitioner’s marks. They contended that through consistent and bona fide use, their mark has acquired distinctiveness in the Indian market. The Respondents further submitted that the Petitioner’s reputation is primarily confined to the United States and Canada, and that baseball is not a widely followed sport in India, thereby negating the claim of transborder reputation or recognition in the Indian market. On this basis, the Respondents submitted that the Petitioner’s marks do not qualify as well-known trade marks within the meaning of Indian trade mark law.

FINDINGS OF THE COURT

The Court observed that the circumstances surrounding the adoption of a trade mark are of significant importance, and where such adoption is tainted by dishonest intent, no extent of subsequent use or volume of sales can cleanse the vice of dishonesty. It further noted that the Respondents provided inconsistent explanations for the adoption of the impugned mark in their Counter Statement and in the cancellation proceedings, thereby raising serious doubts about the credibility of their claims. This inconsistency, according to the Court, reflects the Respondents’ mala fide and dishonest intention to appropriate and ride upon the global reputation and goodwill associated with the Petitioner. Additionally, the Court noted that the marks of the parties are nearly identical.

The Court further observed that the Petitioner had applied for registration of the trade mark “BLUE JAYS” in Class 25 well before the Respondents filed their application for the impugned mark “BLUE-JAY” in the same class. It was thus highly improbable that the Respondents were unaware of the Petitioner’s mark. Moreover, the Petitioner had placed sufficient material on record to establish that products bearing the “BLUE JAYS” mark were available in India since 1996, and that MLB matches had been broadcast in India at least since 1997. These factors, according to the Court, were adequate to “establish use of the mark in India, which need not necessarily be actual or physical in nature”. The Court reiterated the principle that the rights of a prior user prevail over those of a subsequent user. In light of the above, the Court held that the Respondents’ adoption of a mark nearly identical the Petitioner’s mark “BLUE JAYS”, particularly in relation to garments in Class 25, was not bona fide but rather indicative of dishonest intent to trade upon the Petitioner’s goodwill.

The Court emphasized that “the ‘purpose’ of adoption of a trademark plays a very important role, and for this, a purposive interpretation has to be given. If the ‘purpose’ of adoption of a trademark is found to be in doubt, it can be inferred that the registration of the trademark is tainted in ‘bad faith’ and the same may be taken off the Register of Trade Marks.” The Court found the Respondents acted in bad faith, affirmed the Petitioner’s prior rights in the mark “BLUE JAYS” and directed cancellation of the impugned registration.

CONCLUSION

The Delhi High Court’s decision reinforces that the purpose behind the adoption of a trade mark must be bona fide, and any inconsistency in the explanation for such adoption at different stages of the proceedings undermines the credibility of the claim. The Court rightly reemphasized that “use” of a mark in India need not be physical and that prior users enjoy superior rights over the subsequent Applicants. The ruling is a clear warning against dishonest adoption and highlights the importance of maintaining trade mark registrations through timely renewals, regardless of any common law rights.

Reference:

 1. C.O. (COMM.IPD-TM) 279/2023